Delhi District Court
Suresh Kumar Jain vs Eureka Cosmo Pvt. Ltd on 29 May, 2013
IN THE COURT OF SHRI MAN MOHAN SHARMA,
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1
TIS HAZARI COURTS, DELHI.
TM no.: 61/2011
Unique case ID no. : 02401C0622682008
SURESH KUMAR JAIN ....Plaintiff
Versus
EUREKA COSMO PVT. LTD. ....Defendant
ORDER: This is a suit for infringement of trademark, passing off action, damages etc.
2. The defendant has filed an application under Order 7 Rule 10 CPC stating that the Court has no jurisdiction and the plaint is liable to returned.
3. I have heard the arguments as advanced by Shri V. P. Gairaya, Ld. Counsel for the plaintiff and Shri Neeraj Grover, Ld. Counsel for the defendant.
4. The case of the defendant is that none of the parties to the suit are either carrying on any business or resident within the jurisdiction TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 1 of 9 of this court. Both the parties are stationed in Allahabad, Uttar Pradesh. A specific objection on this aspect has been taken by the defendant in the written statement. Neither the plaint nor the documents annexed show anything regarding the jurisdiction of this court. Only a bald averment has been made in para 20 of the plaint that the defendants have committed the impugned acts within the jurisdiction of this Court by conducting, soliciting, selling and marketing their goods and business in Delhi besides other parts of the country. Such averments cannot confer any jurisdiction upon the Court. Law is well settled that mere filing of trademark application will not give jurisdiction to a particular Court to entertain and try the suit for infringement or passing off. The plaintiff has no right to choose a Forum Convenience.
5. It is further submitted on behalf of the defendant that infringement action lies when the mark is actually registered. It does not lie when the plaintiff only believes that his mark would be registered, however strong his belief may be. A certificate of registration issued after the filing of suit to the plaintiff no. 2 has no relevance to date back the cause of action.
6. On the part of defendant the case of Dhodha House vs. S. K. TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 2 of 9 Mangi 2006 (32) PTC 1 (SC) has been relied upon by the defendant to cite that the plaintiff has no branch office at Delhi and is not entitled to invoke the jurisdiction of the Court. A composite suit of trade mark and copyright cannot be used to confer jurisdiction. Dabur India Ltd. Vs. K. R. Industries 2008 (37) PTC 332 (SC) has been relied upon to cite that a composite suit would not entitle a court to have a suit for which it has no jurisdiction.
7. Reliance is placed by the defendant upon the law pronounced in India Performing Rights Society vs. Sanjay Dalla 2008 (155) DLT
164. Ld. Counsel for the defendant has further relied upon Haryana Milk Food Ltd. Vs. Cahmbal Dairy Products 2002 (25) PTC 156 (Delhi) has been relied upon that mere assertions of the plaint without giving further facts or particulars is not sufficient to confer jurisdiction. On similar aspect the case of Ranaissance Hotel Holdings vs. B. Vihaya Sai 2009 (39) PTC 547 (Del.) has been relied upon.
8. Ld. Counsel for the defendant has relied upon Shaw Wallace & Co. vs. M. P. Beer Products P. Ltd. 149 (2008) DLT 391 to cite that only the plaint has to be seen, the averments made in written statement TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 3 of 9 or any piece of evidence are not relevant in rejection of plaint under Order 7 Rule 11 CPC.
9. Per contra, the stand of the plaintiff is that the application is without any basis. The plaintiff is having registered trademark HARI and HARISONS. The plaintiff is also proprietor of registered trademark HS LOGO, HARI and HARISONS (India) Products. The plaintiff is carrying on its business activities under the aforesaid trademark in Delhi. The plaintiff's trademarks have been registered by the trademark Registry in Delhi. The application is stated to be malafide.
10. It is further submitted on behalf of the plaintiff that in para 23 and 24 of the Written Statement the defendant admits sale in Delhi. In view of the admission of the defendant that he was seeking trade in Delhi, the plaintiff is not to file any document of sale. The plaintiff has not claimed any jurisdiction on the basis of publication in Trade Mark Journal.
11. The case of Dhodha House vs. S. K. Mangi 2006 (32) PTC 1 (SC) as relied upon by the defendant is distinguishable as it pertained to TMMA 1958. In TMMA 1958 there was no parimateria provision as section 62 of the Copyright Act.
TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 4 of 9
12. Ld. Counsel for plaintiff has relied upon Pfizer Products Vs. Rajesh Chopra & Ors.' 2006 (32) PTC 301 (DEL.) to cite that threat or intention of defendant to sell goods at Delhi would give the Courts at Delhi the jurisdiction. Amrutanjan Ltd. Vs. Ashwin Fine Chemicals and Pharmaceuticals PTC(Suppl) (1) 27(Mad) to cite that the suit is maintainable at place where a part of cause of action has arisen.
13. S. Oliver Brend Freir GmbH Vs Karni Enterprises 2006(33) PTC 574 (DEL.) has been relied upon by plaintiff to cite that where the defendant is not the resident of Delhi but not denied having carrying business in Delhi, the court at Delhi has territorial jurisdiction. The judgment of Uniliver Asutralasis vs. Shingar Cosmetics 2011 (45) PTC 318 (Karnataka) has been relied upon to cite the scope of section 134 (2) TMA, 1999 where the scope includes instituting suit not only where the defendant is residing but also where the plaintiff is residing. Reliance is also placed upon Uniliver PLC vs. Vesco Laboratories 2011 (48) PTC 315 (Guj.)
14. I have considered the rival submissions and the material on record.
15. I have considered the case law cited by the Ld. Counsel for the TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 5 of 9 parties with utmost reverence.
16. Order 7 Rule 10 CPC reads as under: "10. Return of plaint-- (1) Subject to the provisions of rule 10A, the plaint shall at any state of the suit be returned to be presented to the Court in which the suit should have been instituted. Explanation.--For the removal of doubts, it is hereby declared that a Court of appeal or revision may direct, after setting aside the decree passed in a suit, the return of the plaint under this subrule.] (2) procedure on returning plaint--On returning a plaint, the Judge shall endorse thereon the date of its presentation and return, the name of the party presenting it, and a brief statement of the reasons for returning it."
17. As far as the territorial jurisdiction claimed on the basis of filing of an application for Trade Mark, the law is well settled that it does not give jurisdiction.
18. I am in full agreement with the Ld. Counsel for the defendant that in a composite suit (claiming relief on both the causes of copyright and trade mark) the plaintiff has to show that the Court has jurisdiction visàvis both the reliefs. Merely because the Court has jurisdiction qua one relief in respect of one of the enactment, the jurisdiction cannot be presumed as to the other relief under another TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 6 of 9 enactment. The law laid down in Dhodha House vs. S. K. Mangi 2006 (32) PTC 1 (SC) and Dabur India Ltd. Vs. K. R. Industries 2008 (37) PTC 332 (SC) is authority on this aspect.
19. Now examining the aspect of the territorial jurisdiction it is seen that in the old Act i.e. Trade & Merchandise Marks Act, 1958 the jurisdiction was governed by section 105 which reads as under: "105.Suit for infringement, etc., to be instituted before District Court. No suit
(a) for the infringement of a registered trade marks; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered ;
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit."
20. However section 134 of the Trade Mark Act, 1999 is pari materia the section 62 of the Copyright Act, 1958. Thus the plaintiff in a suit for trade mark shall have additional jurisdiction where he resides or work for gain.
21. In the present suit, in para 12 and 13 of the plaint the plaintiffs TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 7 of 9 have made averments regarding the threats of the defendant to sell the goods in the markets at Delhi. In paras 23 and 24 of the written statement the defendant has stated that the defendant has been selling the goods in Delhi based upon the demands of the traders since 2000 and the plaintiffs have active knowledge of the same.
22. Though the averments of the plaint as read in entirety are very vague about the apprehension of sale on the part of the defendant but the gap is filled up by the averments of the written statement whereby albeit the cause of action of plaintiff has been denied the defendant has admitted its sales in Delhi. The law pronounced in Pfizer Products Vs. Rajesh Chopra & Ors.' 2006 (32) PTC 301 (DEL.) supports the plaintiff in the context of the facts of the case in hand. The law pronounced in S. Oliver Brend Freir GmbH Vs Karni Enterprises 2006(33) PTC 574 (DEL.) also supports the plaintiff in the context of the facts of the case in hand.
23. Which of the rival version is correct can only be seen once the parties have led the evidence. Thus at this stage, in the context of the pleadings and the material on record no case of Order 7 Rule 10 CPC for return of the plaint is made out.
24. The application is therefore dismissed with a caveat that nothing TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 8 of 9 stated herein shall tantamount to an expression of opinion on the merits of the case.
Announced in the Open Court On this 29th day of May 2013 (MAN MOHAN SHARMA) ADJ (Central)01, Delhi TM No. 61/2011 (Suresh Kumar Jain vs. Eureka Cosmo P. Ltd.) Page 9 of 9